Friday, April 28, 2006

New Rules

The PTO is coming out with some new rules to limit continuations. What does that mean?

Few people outside of the business realize that the real game isn't to get a great patent. The game is to get a good patent, and then to keep prosecution alive by filing "continuations" (the exact same patent but with new claims, which are what determine infringement). As long as a continuation is alive, the specification can be "mined" to create claims that read on what an infringer is doing. Simply put, you can rewrite the patent to make it say exactly what a competitor is doing. Unfair? Maybe, but that's what everyone does.

Sometimes continuations issue as patents, so another continuation has to be filed. And then another. And another... As long as one is still alive.

Now the PTO wants to limit the number of continuations to lighten their workload. One problem is that they are limiting the number of continuations plus requests for continued examination to one. An RCE is often filed just to get a first patent issued, which kills any chance of even a legitimate continuation. The alternative is to appeal. That means that teh Examiners might have a lighter workload, but the PTO will need to hire hundreds of new magistrates (or whatever they are) for the Board of Patent Appeals and Interferences. And with the need to make the first patent that much better, people will be fighting much harder on appeals to get multiple claim sets patented. Thus, the new rules will likely shift the workload and require new hires rather than reducing the workload.

There are two much easier solutions that actually would reduce the workload and make patentees happy:1) Allow the filing of continuations when there is no pending application. Many other countries do this, and it would eliminate the need to keep filing them just to keep one alive. I believe that this is the most "elegant" solution.2) Allow a delay in prosecuting a continuation. That is, leave it on the shelf until the applicant says to start prosecuting it. Even make them pay a fee to keep it alive on the shelf each year. This seems like more trouble for everyone involved than Solution #1, but some people seem to prefer it. Maybe because the PTO is more likely to go for something like this.

Note: None of this is the position of my firm or their clients. These are just the thoughts of someone who's been prosecuting for about than 6 months.